What is Patentable: From Microorganisms to Abstract Ideas

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What Inventions are Patentable?

35 United States Code (U.S.C.) 101 provides the statutory basis for what inventions are patentable.

35 U.S.C. 101 reads, “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.”

Are Manmade Microorganism Patentable?

In the US Supreme Court case of Diamond v. Chakrabarty, 447 U.S. 303 (1980), the Court held that 35 U.S.C. 101 did not prohibit a manmade microorganism from being patented.

On page 309 of Diamond, Mr. Chief Justice Burger wrote, “…when the patent laws were recodified, Congress replaced the word “art” with “process,” but otherwise left Jefferson’s language intact. The Committee Reports accompanying the 1952 Act inform us that Congress intended statutory subject matter to “include anything under the sun that is made by man.”

Are Abstract Ideas Patentable?

1.) In this example, the question posed involves an invention explaining how buyers and sellers in the energy market protect or hedge against the risk of price changes to determine if it is patentable.

In the US Supreme Court case of Bilski v. Kappos, 561 U.S. 593 (2010) it was held that Bilski’s program was not patentable subject matter.

On Pages 611-612, Mr. Justice Kennedy wrote, “The concept of hedging, described in claim 1 and reduced to a mathematical formula in claim 4, is an unpatentable abstract idea, just like the algorithms at issue in Benson and Flook. Allowing petitioners to patent risk hedging would preempt use of this approach in all fields, and would effectively grant a monopoly over an abstract idea.”

2. In this example, the question involves a computer-implemented scheme for mitigating “settlement risk” as a patentable abstract idea.

“The patents at issue in this case disclose a computer-implemented scheme for mitigating “settlement risk”…only one party to a financial transaction will pay what it owes) by using a third-party intermediary. The question presented is whether these claims are patent eligible under 35 U.S.C. § 101, or are instead drawn to a patent-ineligible abstract idea. We hold that the claims at issue are drawn to the abstract idea of intermediated settlement, and that merely requiring generic computer implementation fails to transform that abstract idea into a patent-eligible invention.”

Judicial Exceptions to Patentability

On page 216 of Alice Corp. Pty Ltd., the long standing judicial exemptions to patentability were reiterated. The Court stated, “We have long held that this provision contains an important implicit exception: Laws of nature, natural phenomena, and abstract ideas are not patentable.”…We have interpreted § 101 and its predecessors in light of this exception for more than 150 years.”

The judicial exceptions to patentabilty are:

Laws of nature

Natural phenomena

Abstract ideas

On page 217 of Alice Corp. Pty Ltd., Mr. Justice Thomas wrote:

“Accordingly, in applying the § 101 exception, we must distinguish between patents that claim the ” ‘buildin[g] block[s]’ ” of human ingenuity and those that integrate the building blocks into something more,…thereby “transform[ing]” them into a patent-eligible invention. The former “would risk disproportionately tying up the use of the underlying” ideas,and are therefore ineligible for patent protection. The latter pose no comparable risk of pre-emption, and therefore remain eligible for the monopoly granted under our patent laws.”

Based on Business Patent Law’s experience, if your company’s invention(s) are chemical, electrical, electromechanical, mechanical, optical or pharmaceutical, only on rare occasions could the judicial exceptions to patentability potentially manifest.